| The stem cell article by Jennifer Washburn in the April | | | | Merck v. Integra. Neither the Washburn nor Loring |
| 12, 2006 issue of the Los Angeles Times mentioned | | | | Campbell articles discuss that patent infringement |
| Jeanne Loring, an embryologist at the Burnham | | | | suits against states and state bodies (such as |
| Institute in La Jolla: In 1999, Loring tried to launch a | | | | California's CIRM) are likely to be heard in state court, |
| company to work with stem cells, but the firm | | | | not federal court, according to the Supreme Court |
| quickly collapsed when it couldn't raise the $100,000 in | | | | decision in Florida Prepaid Postsecondary.Although |
| upfront fees the Wisconsin foundation [WARF] | | | | there may be a visceral reaction to lash out against |
| charged.Washburn's article did not mention an earlier | | | | patents perceived to be overbroad, the cautionary |
| article by Loring and co-author Cathryn Campbell, | | | | tale of NTP v. RIM suggests that sometimes |
| entitled "Intellectual Property and Human Embryonic | | | | negotiation is the better path for infringement |
| Stem Cell Research," which appeared in 311 Science | | | | defendants. Further, Loring/Campbell mention the |
| 1716 on March 24, 2006. Therein, Loring and Campbell | | | | possibility of an interference with Plurion, although this |
| mentioned the changing royalty fees charged by | | | | most likely would change only the identity of the |
| WARF in response to a "memo of understanding" | | | | owner of controlling patents. Separately, one recalls |
| (MOU) with the federal funding agency. Loring | | | | that the Thomson patents are about creating stem |
| Campbell mentioned the "SBIR paradox" as to funding | | | | cells from blastocysts; they are not about "cloning" |
| of small businesses, which may be a problem, but not | | | | [SCNT] technology. To date, traditional methods for |
| one associated with patent law.Both the Washburn | | | | stem cell separation from blastocysts have failed |
| and Loring/Campbell articles suggested that the | | | | wherein SCNT is involved. There may be a question |
| WARF/Thomson patents would pose a long-term | | | | of enablement as to the Thomson patents for cases |
| threat to stem cell science. Washburn noted the | | | | involving SCNT, which is where the holy grail of |
| position of the Foundation for Taxpayer and | | | | patient-specific stem cell lines resides.As a general |
| Consumer Rights, based in Santa Monica, which urges | | | | proposition, the state taxpayers underwriting efforts |
| California's stem cell agency to challenge the | | | | such as Proposition 71 have the expectation that |
| Wisconsin patents. In greater detail, the Santa Monica | | | | money will be used for research, not to litigate the |
| group stated: The stem cell institute faces a threat | | | | patent positions of prior researchers. Extrapolating |
| from a foundation associated with the University of | | | | further, state funding to achieve patent positions |
| Wisconsin [WARF], which claims that it is owed | | | | could lead to a balkanization of research, in which |
| licensing fees because it holds patents on all human | | | | entities from individual states (such as California, New |
| embryonic stem cells in the United States. John M. | | | | Jersey, Maryland, Illinois, Connecticut) are fighting one |
| Simpson stated: "This is an outrageous raid on the | | | | another, rather than collaborating.Lawrence B. Ebert is |
| treasury of California based on over-reaching patents. | | | | a registered patent attorney located in central New |
| No other nation in the world recognizes them. They | | | | Jersey. He holds a Ph.D. from Stanford, a J.D. from |
| are blocking vital research in the United States. I call | | | | the University of Chicago, maintains a blog at |
| on the stem cell institute to challenge the patents' | | | | IPBiz.blogspot.com, and is the author of LESSONS TO |
| validity."Neither the Washburn nor Loring/Campbell | | | | BE LEARNED FROM THE HWANG MATTER: |
| articles discuss the possible research safe harbor | | | | ANALYZING INNOVATION THE RIGHT WAY, |
| created in the Hatch-Waxman Act and codified at 35 | | | | published in the Journal of the Patent & Trademark |
| USC 271(e)(1). The breadth of this safe harbor was | | | | Office Society [88 JPTOS 239 (March 2006)]. Ezine |
| recently affirmed in the Supreme Court decision of | | | | draft submitted April 13, 2006. |